Guide to Trademark Applications

memorandum

TO:

My Clients

FROM:

Peter Kelman

DATE:

April 1, 2001

SUBJECT:

Trademark Application Process

Please supply the following information about your trademark. The administrative filing fee for a trademark application is $325 per class. I will need a check from you in this amount made out to the Assistant Commissioner of Trademarks.

For item number 9, you will need to supply an example of material using the mark in the way we describe it.

Date Mark is first used in interstate commerce (not needed for intent-to-use)

Example of use (specimen) (not needed for intent-to-use)

EVALUATING WHETHER TO APPLY FOR FEDERAL REGISTRATION OF A MARK

Typically several steps occur before a trademark registration is filed with the Patent and Trademark Office to determine if it is appropriate to file an application. First, we can conduct on on-line search of the intended mark to determine whether any identical or similar marks have been trademarked. An on-line search costs approximately $150 to access the proprietary on-line database of trademark information.

Depending on the results of an on-line search, it may be advisable to engage a trademark search company, Thomson & Thomson, to conduct a more rigorous trademark search of more data bases and more thoroughly searching for similar marks and matches. The cost of a search conducted by Thomson & Thomson varies from $350 to approximately $500. This type of thorough search is not always necessary depending on the circumstances of your particular case.

The overall cost of applying for federal registration of a mark, assuming some sort of search, and including administrative fees and professional services, usually runs between $1,500 and $2,000. This assumes that no opposition is filed either by the patent and trademark office or some other third party. If any opposition is filed, the cost can only be estimated at the time we learn of the nature of the opposition.

ISSUES RELATING TO CONFLICTING MARKS

There are two principal issues involved in evaluating possible trademark conflicts. First, the presence of a prior federal USPTO filing may lead the USPTO to reject or suspend a new application for a similar mark. Second, a prior user of a mark may bring a legal action for infringement against a subsequent user of a similar mark, seeking an injunction and/or an award of damages. In its conflict review, the USPTO considers only prior federal filings, including pending applications and issued registrations. Conflicting state registrations or common law uses are not taken into account in this review. A prior user without a federal registration may, however, oppose the application after the USPTO review is complete, or may seek cancellation of the federal registration after it is granted. An unregistered prior user may also claim infringement in a legal action, or assert a right to continue its use of the name, even though the subsequent user has a federal registration.

Evaluation of trademark conflicts is inherently fact‑oriented and inexact. The ultimate question is whether there is a “likelihood of confusion” between the marks. This involves the consideration of a variety of factors including the similarity of the marks in sound, appearance and meaning, the similarity of the products or services identified by the marks, the similarity of the customer groups to which the products or services are marketed, the level of sophistication of the customers and the extent of attention given to the decision between competing suppliers, and other factors. Also, for the reasons discussed above, the trademark searches may not identify all potential conflicts. Although we will seek to provide our best judgment as to the effect of potential conflicts identified in the trademark search reports, we cannot provide any assurance as to the final outcome of application proceedings in the USPTO or as to the possibility of a legal action claiming infringement.

ISSUES RELATING TO THE NATURE OF THE MARK

The function of a trademark is to identify and distinguish the goods and services of one seller from those sold by all others. A mark may not be entitled to protection if it is determined to be (1) descriptive of the goods or services to which it relates, or (2) the generic term for such goods or services.

A mark is considered descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, a mark for restaurant services which comprises the generic name of a food that is the speciality of the house can be descriptive of the restaurant services ‑ LE CROISSANT SHOP was held to be descriptive of restaurant services since prospective customers would know that croissants would be sold at the shop.

A generic term is one that is commonly used as the name of a kind of good or service. For example, the term BUNDT, which identifies a type of cake, was not registered as a trademark for a cake mix because it was considered generic.

The USPTO frequently denies registration based on a determination that the mark is descriptive or generic. These determinations generally involve subjective judgments, relating both to the mark itself and to the goods or services it will designate, so it is sometimes possible to overcome an initial rejection on these grounds by presenting arguments to the contrary. Whether or not registration is obtained, marks which are relatively descriptive or generic are generally considered to be “weak” marks, which will be enforced, if at all, only within a narrow field. In order to gain the most protection, it is best to choose a mark which is suggestive (hinting at the nature of the goods or services, or something about them, without describing them), arbitrary (totally unrelated to the goods or services), or fanciful (a symbol or coined word such as KODAK or XEROX). A common illustration of this spectrum is the word APPLE, which would be generic for apples, descriptive for apple pies, suggestive for gift items for teachers, and arbitrary for computers or musical recordings.

It is sometimes possible to obtain registration for a descriptive mark, but not a generic one, by demonstrating that the mark has “acquired distinctiveness.” Acquired distinctiveness is also referred to as “secondary meaning.” This usually requires the presentation of evidence that the mark has been used over an extended period (five years is generally sufficient) and that substantial expenditures have been made to promote the mark.

With a descriptive mark, but not a generic one, it may be possible to obtain registration on the “Supplemental Register.” Marks which are registered without any issue of descriptiveness are on the “Principal Register.” Registration on the Supplemental Register offers the advantage of getting your mark “on the record,” but does not offer significant legal protection against use of similar marks in connection with similar goods and/or services. The ® registration symbol may be used in the case of a mark registered on the Supplemental Register. It is a common strategy with relatively descriptive marks to apply for registration on the Principal Register but, if the USPTO opposes on grounds of descriptiveness and cannot be persuaded otherwise, amend the application to place the mark on the Supplemental Register. After five years on the Supplemental Register, it would be appropriate to apply to transfer the mark to the Principal Register based on acquired distinctiveness.